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What happens if Apple wants your trademark?

A firm in Australia with plans to do business in the US has been inundated with visits to its website after Apple announced that it will use the trademark, HEALTHKIT, for its new iPhone health app under its new IOS 8 operating system to be released in a few months.

Under the trademark law of most jurisdictions, if two marks look and sound alike and are for the same or similar goods or services then a second user of a trademark can prevent the first from using a particular mark. This also applies to similar, but not identical, marks. It will be more complicated in the present situation since trademarks are enforceable geographically.

In particular, if the Australian firm has not yet sold goods or services in interstate commerce using HEALTHKIT, or filed a trademark application for this mark in the US, then Apple could be in the free and clear at least relative to its US rights since there is no prior user for the relevant goods or services. In Australia things look more favorable for HealthKit co-founder Alison Hardacre's right to use this Mark and prevent Apple from doing so since she has already been using the mark in Australia and it appears that Apple has not done so. Coincidentally, Ms. Hardacre learned the news of Apple's intention to make her life difficult on her iPhone ... So maybe Apple will take it easy on her when it finds this out.

It would not be surprising if Apple decided to pursue use of its desired mark in Australia regardless of who has used it before. The iPhone maker is no stranger to using its desired marks regardless of who else is already using it as Cisco found out on more than one occasion. For anyone without Apple's resources and clout conflicts between trademarks may be avoided by having a trademark search performed prior to the adoption of a new trademark to ensure there will be no conflict with such a new mark for particular goods or services. If another mark is found then the potential new user may negotiate with the prior user relative to rights over the mark or a different mark may be chosen. Unless you are Apple of course ...

Compare jurisdictions: Trademarks

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